Use of mark as primary distinctive element of domain name implies bad-faith registration

International

The World Intellectual Property Organisation (WIPO) has issued a decision in a case brought by the Italian fashion house Giorgio Armani SpA concerning the domain name ‘armanijeansit.com’. The complaint was brought under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the single-member panel ordered the domain name to be transferred to the complainant.

The respondent, Wang Jihua, based in Fujian, China, did not respond to the complaint. The domain name was being used to point to a parking site containing sponsored links, one of which was directly associated with the ARMANI trademark.

The respondent did not respond to the complainant's cease and desist letter and, on May 27 2013, the complainant filed a UDRP complaint with WIPO.

To be successful in a complaint under the UDRP, a complainant must show all of the following:

  • The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.

The panel dealt with the language of proceedings as a preliminary procedural issue. Paragraph 11(a) of the UDRP Rules provides that:

"unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding".

Thus the choice of language was at the panel's discretion, although the panel pointed out that it was established practice to take Paragraphs 10(b) and 10(c) of the rules into consideration when determining the language of proceedings. These paragraphs require the panel to ensure that both parties are treated with equality and that the proceeding takes place with due expedition. Bearing this in mind, the panel noted the following:

  • The domain name was pointing to a website containing text in English, thus suggesting that the respondent was familiar with English;
  • The respondent was notified of the proceedings by WIPO in both English and Chinese and given a fair opportunity to object to the complainant's request to change the language;
  • The complainant was not Chinese and thus conducting the proceedings in Chinese would cause additional expense and delay; and
  • The respondent had shown no interest in responding.

As a result, the panel determined that it was appropriate for the proceedings to continue in English.

Moving on to the first of the three requirements of the UDRP, the complainant evidenced that the domain name was identical, or confusingly similar, to its ARMANI and ARMANI JEANS trademarks because it combined the complainant's trademark with the additional term ‘it’. The panel found that the addition of this non-distinctive and descriptive element was insufficient to effectively differentiate the domain name from the complainant's trademark and thus found that the first limb was satisfied.

With regard to the second limb of the UDRP, it is well-established that the consensus view of UDRP panels on the burden of proof provides that complainants are required to make out a prima facie case that respondents lack rights or legitimate interests. Once such prima facie case is made, it is the respondent who must rebut this.

In this case, the panel considered that no evidence had been provided by the respondent indicating it had rights or legitimate interests in the domain name. The panel noted that the domain name was being used to point to a parking site generating sponsored search results in association with the ARMANI trademark and, consequently, it was of the opinion that the respondent was obviously exploiting the goodwill of the complainant's trademark to mislead consumers.

Turning to the last prong of the UDRP, the complainant alleged that the domain name was registered and used in order to attract internet users to the respondent's website for commercial gain by creating a likelihood of confusion with the complainant's well-known ARMANI marks, as set out at paragraph 4(b)(iv) of the UDRP.

As far as registration in bad faith was concerned, the panel found that the ARMANI trademarks had been registered in many countries and acquired an international reputation prior to the registration of the domain name. Thus the incorporation of the identical ‘armanijeans’ phrase "as the primary distinctive element of the disputed domain name" implied its registration in bad faith. In addition, the panel found that the domain name had been used in bad faith, given the pointing to a parking website and the sponsored links which would generate commercial revenue for the respondent.

Against this backdrop, the panel decided to transfer the domain name.

This decision highlights the effectiveness of the UDRP when used for relatively straightforward cybersquatting cases. Given that the complainant is an Italian company, internet users who type ‘www.armanijeans.it’ (using the Italian country-code top-level domain) are directed to ‘www.armani.com’ by the complainant, and thus it seems quite likely that the respondent chose the domain name in an attempt to capture internet users searching for the complainant using the ‘it’ suffix after ‘armanijeans’, but then adding ‘.com’ by mistake, perhaps out of force of habit. The fact that the panel was able to use its discretion to allow English as the language of the proceedings ensured that there was no unnecessary delay and that the domain name was transferred to the complainant relatively quickly and cheaply.

David Taylor, Hogan Lovells LLP, Paris

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